If any person is aggrieved by an entry wrongly made or wrongly remaining on the register of trademark, he is entitled to file a petition for cancellation of registration or rectification of the register for removal of the registered mark. Rectification of the register is a proceeding in which a party seeks to remove a registered trademark from the register. In India, Section 47 of the Trademarks Act lays down two scenarios regarding removal of a registered trademark namely:

    1. If it is proved that the trademark was registered without any bona fide intention of use on part of the owner. Quite often, as part of trademark searches that we conduct prior to filing, we come across applications which have been filed in all the 45 classes although the mark is actually used for one or two classes only. This is termed as defensive registration and the court has held in various cases that such registrations should not be encouraged. Therefore, if a person proves that the applicant has no intention of actually using the mark with respect to the products and services the mark has been filed with respect to, a petition for cancellation can be filed for removal of the mark from the trade register.
    2. If the trademark has not been used for a continuous period of 5 years from the date of registration of the mark and three months prior to filing the application for registration. In effect, if the mark has not been used for a period of 5 years and 3 months, then any aggrieved person may file a petition for the rectification of registration for the removal of the registered mark from the trade register. In the present case, even if there was some initial usage of the mark, if the mark has not been used for a continuous period of 5 years after registration of the mark, then an application for rectification can be filed. An application for rectification of a registered mark can also be filed in the event a mark has been wrongly registered or may have remained on the register even after its expiry.

For further information on filing an application for cancellation/rectification on grounds of non-use, please read our blog post or write to us at info@selvams.com.